Aqua Dam, Inc. and Water Structures Unlimited, LLC v. Gr Shak / Accounts Department
Claim Number: FA2203001990136
Complainant is Aqua Dam, Inc. and Water Structures Unlimited, LLC (“Complainant”), represented by Joshua S. Rupp of Kirton McConkie, Utah, USA. Respondent is Gr Shak / Accounts Department (“Respondent”), represented by Cameron Ward of Virtuoso Legal, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aquadam-europe.com> and<aquadam.org>, registered with 123-Reg Limited; Mesh Digital Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2022; the Forum received payment on March 29, 2022.
On April 4, 2022, 123-Reg Limited; Mesh Digital Limited; confirmed by e-mail to the Forum that the <aquadam-europe.com> and <aquadam.org> domain names (the Domain Names) are registered with 123-Reg Limited; Mesh Digital Limited; and that Respondent is the current registrant of the names. 123-Reg Limited; Mesh Digital Limited; has verified that Respondent is bound by the 123-Reg Limited; Mesh Digital Limited; registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 6, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aquadam-europe.com, postmaster@aquadam.org. Also on April 12, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 5, 2022.
Complainant filed an Additional Submission on May 11, 2022 which was considered by the Panel.
On May 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUES
Multiple Complainants
Two parties, Aqua Dam, Inc. and Water Structures Unlimited, LLC, filed this administrative proceeding as Complainants. The rules governing multiple complainants are Rule 3(a) and the Forum’s Supplemental Rule 1(e). Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as the “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In this case, the Complaint alleges that Complainant Water Structures Unlimited owns the AQUA DAM mark and Complainant Aqua Dam, Inc. is an authorized licensee thereof, and that they are commonly owned and controlled. While there is no documentary evidence of this, the Complainant’s allegations are not disputed, and the Complainant Information section of the Complaint lists the same mailing and email addresses for both. On the basis of this information the Panel finds that it is proper for both Complainants to file and prosecute a single Complaint. The Panel will treat them as a single entity for the purposes of this proceeding. All references to “Complainant” in this Decision, even though in the singular, are to both named Complainants.
Multiple Domain Names
The Complaint relates to two Domain Names. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Common ownership and control of both Domain Names is alleged by both parties and there is no basis for any other finding. The Panel finds that both Domain Names are under common control and will procced as to both of them.
Business/Contractual/Trademark Dispute Outside the Scope of the UDRP
Respondent claims rights in the AQUA DAM mark through its registration of that mark with the UK Intellectual Property Office and the European Union Intellectual Property Office, and that it has done business under the “Aquadam Europe Limited” name since 2014. Complainant claims rights in the AQUA DAM mark through its registration of that mark with the United States Patent and Trademark Office, that Respondent’s registrations of the AQUA DAM mark were made as an agent of Complainant, and that any rights Respondent had in the mark ended when a distribution agreement between the parties was terminated in January 2020. In sum, Complainant and Respondent both assert rights to the AQUA DAM mark.
The Panel finds that this dispute falls outside the scope of the Policy. In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Forum July 20, 2000), the panel found that legitimate disputes should be decided by the courts and explained the bases for its finding as follows:
The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.
Many other UDRP panels have chosen to dismiss UDRP complaints which involved legitimate trademark disputes. Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else), Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”). The parties are already litigating their respective rights to the AQUA DAM mark (and other issues arising out of the distribution agreement mentioned above) in a civil action pending before the United States District Court for the District of Northern California (copy of Complaint submitted as Complaint Exhibit 11). That is the proper forum for this dispute. The outcome of the parties’ competing claims for the Domain Names at issue here will be determined by the outcome of that litigation. For the reasons articulated in the Commercial Publishing Decision quoted above, the Panel chooses to dismiss the instant Complaint.
Because the issues raised by the pleadings in this proceeding are outside the scope of the Policy, it is Ordered that the Complaint be and it hereby is DISMISSED, without prejudice to the right of the Complainant to re-file the same with respect to the <aquadam-europe.com> and <aquadam.org> Domain Names at such time as the right to control the AQUA DAM mark is finally determined.
Charles A. Kuechenmeister, Panelist
Dated: May 12, 2022
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